CBS Inc. opposed the registration of applicants' marks on the ground of priority of use and likelihood of confusion. Opposer claims use of the mark RESCUE: 911 as a service mark for a television program series since prior to May 31, 1990. [FN3] Opposer has made the following allegations:

7. As a result of the tremendous popularity of Opposer's television program series "RESCUE: 911," Opposer has entered into several licensing arrangements and has licensed the use of its mark "RESCUE: 911" for various merchandise items, such as mugs, caps, T-shirts, sweatshirts, watches and toys.

8. Upon information and belief, Applicant has made no use in the United States of the mark "911 RESCUE BAR" prior to May 31, 1990.

9. Upon information and belief, the goods for which Applicant seeks to register its mark--candy bars--are related to those in connection with which Opposer has used its "RESCUE: 911" mark.

10. The dominant portion of Applicant's mark contains a word and number identical to the word and number comprising Opposer's mark, but in reverse order, and so resembles Opposer's "RESCUE8 911" mark, as to be likely when applied to the goods of the Applicant, to cause confusion, or to cause mistake or to deceive. As Applicant has disclaimed the exclusive right to use "BAR," it is evident that "911 RESCUE" is the dominant portion of the Applicant's mark.

11. As a result of Applicant's use of the mark "911 RESCUE BAR," the public is likely to be confused and deceived into the mistaken belief that goods offered and advertised by Applicant have their origin with Opposer, and that such goods are approved, endorsed, or sponsored, by, or associated in some way with, Opposer. This confusion is likely since Opposer is already using its mark "RESCUE: 911" on various merchandise items, as noted in Paragraph 7 above. Applicant's use of the mark "911 RESCUE BAR" on candy bars would lead the public into the mistaken belief that these candy bars are another merchandise item on which Opposer is using its mark.

12. Opposer would be injured by granting Applicant a certificate of registration for its mark, because it is so similar to Opposer's "RESCUE: 911" mark that, when applied to the goods of Applicant, it would be likely to cause confusion, to cause mistake or to deceive and would suggest falsely a connection with Opposer. Opposer further would be injured by the granting of such registration, because it inevitably would damage Opposer's valuable rights in its "RESCUE: 911" mark.

In their answer, applicants admitted paragraph Nos. 9 and 10 of the opposition; denied paragraph No. 11, asserting that in view of applicants' superior rights in their marks, "... [i]t is Opposer's use (rather than Applicant's use) of the mark" which will confuse and deceive the public; denied paragraph No. 12, asserting that in view of applicants' superior rights in their marks, applicant (not opposer) will be injured; and denied the remaining allegations.

*2 Applicants filed a counterclaim to cancel opposer's pleaded registration on the grounds of priority of use and likelihood of confusion. Applicants allege use of the marks 911 RESCUE BAR since at least as early as October 22, 1985 [FN4] and 911 RESCUE TEAM on t-shirts since at least as early as December 4, 1985.

Opposer denied the salient allegations in applicants' counterclaim to cancel opposer's pleaded registration and pleaded the affirmative defenses of laches, acquiescence and estoppel. Opposer also pleaded that applicants have abandoned use of their marks 911 RESCUE BAR and 911 RESCUE TEAM and that because there are no grounds to support the allegations in the counterclaim, applicants filed the counterclaim in violation of Fed.R.Civ.P. 11.

On April 1, 1992, applicants filed a motion under Fed.R.Civ.P. 12(e) requesting that paragraph No. 17 of applicants' counterclaim be deemed admitted, [FN5] and to strike under Fed.R.Civ.P. 12(f) opposer's first, second and fourth affirmative defenses and opposer's request for attorneys' fees. [FN6] Applicants argue that because applicants admitted that candy bars are related to products in connection with which opposer has used its mark and that applicants' marks so resemble opposer's mark as to be likely, when applied to the goods of applicant, to cause confusion, to cause mistake or to deceive, likelihood of confusion is not in issue. That is,

The consequence of Opposer making its allegations in Paragraphs 9 and 10; and Applicant admitting these allegations in Applicant's answer, is absolutely clear, that is, the issue of likelihood of confusion between applicant's 911 RESCUE BAR and Opposer's RESCUE: 911 mark for its television series as set forth in U.S. Registration No. 1,592,451 ('451) is no longer in controversy and stands as a finding of fact.

Applicants' memorandum in support of its motion, page 4.

Applicants assert that opposer's claim that it is without knowledge or information sufficient to form a belief as to the truth of the allegation in paragraph No. 17 is unwarranted because paragraph No. 17 merely requires opposer to admit what opposer pleaded in paragraph Nos. 9 and 10 in its oppositions.

Applicants argue that the affirmative defenses of laches, acquiescence and estoppel should be stricken because the issue of likelihood of confusion has been admitted and, therefore, confusion is inevitable.

On April 20, 1992, opposer filed a brief in response to applicants' motion for a more definite statement, a motion to strike opposer's affirmative defenses and a motion to amend opposer's answer to the counterclaim to cancel opposer's pleaded registration. By this amendment, opposer admits that it made the allegations in paragraphs Nos. 9 and 10 of Opposition Nos. 85,324 and 85,330, but opposer "... [d]enies the remaining allegations in Paragraph 17, and without limiting this denial, expressly denies that the allegations in Paragraphs 9 and 10 of its Oppositions constitute an admission of related goods or likelihood of confusion in any context other than the context in which they were pleaded in the oppositions; namely, as allegations inseparably related to paragraphs 7 and 11..." [FN7]

*3 Opposer argues that its amended answer is a more definite statement of the basis and scope of its denial to the allegations in paragraph No. 17 of the counterclaim. Opposer asserts, in essence, that applicant's use of its mark on candy is likely to cause confusion with opposer's mark because opposer has used its mark on a wide variety of merchandise to promote opposer's television show and that the public will assume that applicant's candy bars are merchandise used to promote opposer's television show, but that, in the context of applicant's counterclaim to cancel opposer's pleaded registration, candy bars are not related to television shows.

Opposer argues that, in its answer to the counterclaim and its amended answer to the counterclaim, opposer denied that there is a likelihood of confusion with respect to the television series; that the issue of likelihood of confusion is a question of law to be decided by the Board; that likelihood of confusion is not inevitable; and that the affirmative defenses of laches, acquiescence and estoppel should not therefore be stricken.

Applicants filed a reply brief and a brief in response to opposer's motion to amend opposer's answer. Applicants argue that opposer is attempting to "... [a]rtfully escape the consequences to CBS resulting from admissions made in its initial Opposition and subsequent admissions made by Applicants in their Answer."

Applicants also argue that if the Board accepts opposer's argument that paragraph Nos. 9 and 10 related only to the collateral merchandise upon which opposer uses its mark, then the opposition should be dismissed under Fed.R.Civ.P. 12(b)(6) for failure to state a claim upon which relief can be granted because opposer did not plead prior use of its mark RESCUE: 911 on the collateral merchandise.

Applicants' motion asking that paragraph No. 17 in applicants' counterclaim be deemed admitted is a motion for judgment on the pleadings, under Fed.R.Civ.P. 12(c), with respect to the issue of likelihood of confusion. [FN8] A motion for judgment on the pleadings is designed to provide a means of disposition of cases when the material facts are not in dispute and judgment on the merits can be achieved by focusing on the pleadings. A motion for judgment on the pleadings has utility when all the material allegations are admitted in the pleadings and only questions of law remain. Wright & Miller, Federal Practice and Procedure: Civil 2d § 1367 (1990). A motion for judgment on the pleadings will be granted when the moving party establishes that no material issue of fact remains to be resolved and that he is entitled to judgment as a matter of law. In considering a motion for judgment on the pleadings, the trial court is required to view the facts presented in the pleadings and the inferences to be drawn therefrom in a light most favorable to the nonmoving party. Wright & Miller, Federal Practice and Procedure: Civil 2d § 1368 (1990).

Construing the opposition in a light most favorable to the nonmoving party, opposer, we might well say that paragraph Nos. 9 and 10 assert likelihood of confusion based upon opposer's use of its mark on its collateral merchandise, not based upon its television series. However, we note that while opposer pleaded priority of use and ownership of a registration and also alleged that it has licensed the use of its mark on collateral merchandise, opposer did not allege use of its mark on the collateral merchandise prior to applicants' use of their marks. Accordingly, unless the notice of opposition as a whole is construed to include a pleading of likelihood of confusion based upon opposer's use of its mark for its television series, the opposition does not state a claim upon which relief can be granted, because opposer has not pleaded priority of use of its mark for its collateral merchandise.

*4 If we construe the opposition as a whole to assert likelihood of confusion based upon opposer's television series, as well as its collateral merchandise, and thus to state a claim upon which relief can be granted, opposer is estopped by its own pleading in this proceeding from contending, in response to the counterclaim, that its mark for its television series does not so resemble applicants' marks for candy bars as to be likely to cause confusion. Cf.: Power Conversion, Inc. v. C & W Lektra-Bat Co., 181 USPQ 185 (TTAB 1973); and Brown Co. v. American Stencil Manufacturing Co., Inc., 180 USPQ 344 (TTAB 1973).

Opposer's attempt to amend its answer to paragraph No. 17 of applicants' counterclaim does not help opposer. As indicated previously, the notice of opposition does not state a claim upon which relief can be granted unless is its construed as asserting likelihood of confusion based upon opposer's use of RESCUE: 911 in connection with opposer's television series. Accordingly, opposer's motion to amend its answer to paragraph No. 17 of applicants' counterclaim is denied.

It is apparent from the foregoing that the motions with which we are now faced stem from the ambiguity of the pleadings in the notice of opposition. Accordingly, and because this proceeding is still in the early stages of discovery, applicants' motion for judgment on the pleadings is granted to the extent that opposer is allowed twenty days from the mailing date of this order to clarify its pleading by filing an amended opposition, failing which judgment on the pleadings will be entered on the issue of likelihood of confusion even as to the television series [FN9] and this case will go forward only on the issue of priority of use. If opposer intends to allege likelihood of confusion based on opposer's use of its mark on the collateral merchandise used to promote its television series but not on the basis of the television series, then opposer must allege prior use of its mark on the collateral products in order to state a claim upon which relief can be granted. Opposer's amended pleading should clearly indicate whether its claim of likelihood of confusion is based upon its services or its collateral merchandise, or both, and whether it claims priority of use of its mark on its collateral merchandise.

In view of the preceding discussion, applicants' motion to strike the affirmative defenses of laches, acquiescence and estoppel is denied as moot. However, after all of the amended pleadings have been filed, applicant may renew its motion, if appropriate.

In sum, opposer's motion to amend its answer to the present paragraph No. 17 of the counterclaim is denied; applicants' motion to strike opposer's affirmative defenses is denied as moot; and applicants' motion for judgment on the pleadings is granted to the extent indicated above, with opposer being allowed time to file an amended opposition.

*5 Applicants' answer to opposer's amended opposition is due thirty days after the service date of opposer's amended opposition.

Opposer's answer to applicant's amended counterclaim, if any, is due thirty days after the service date of applicants' amended answer and counterclaim.

Proceedings are otherwise suspended.

On May 28, 1992, opposer filed a motion to extend its time to respond to applicant's outstanding discovery requests and to reset trial dates, including the time for discovery, to which applicants consented. In view of the preceding decision, opposer's motion is granted to the extent that when proceedings herein are resumed, opposer's time to respond to applicants' outstanding discovery requests will be reset, and trial dates, including the time for discovery, will be reset.

FN3. Opposer claims ownership of Registration No. 1,592,451 for the mark RESCUE: 911 for entertainment services, namely, television series. The registration issued from an application filed August 21, 1989, claiming use since April 10, 1989.

FN4. Applicants' counterclaim does not state the goods on which applicants have used, since October 22, 1985, the mark 911 RESCUE BAR; presumably, applicants claim use of 911 RESCUE BAR on candy bars.

(a) Upon information and belief, the goods for which Applicants seek to register its mark--candy bars--are related to those in connection with which Opposer has used its "RESCUE: 911" mark.

(b) The dominant portion of Applicant's mark contains a word and number identical to the word and number comprising Opposer's mark, but in reverse order, and so resembles Opposer's "RESCUE: 911" mark, as to be likely when applied to the goods of Applicant, to cause confusion, or to cause mistake or to deceive. As applicant has disclaimed the exclusive right to use "BAR", it is evident that "911 RESCUE" is the dominant portion of the Applicant's mark.

In its answer to paragraph No. 17, opposer stated that it was without knowledge or information sufficient to form a belief as to the truth of the allegations, except opposer admitted that it made the allegations referred to in the oppositions.

FN6. In opposer's brief in response to applicant's motion and opposer's motion to amend its answer, opposer has withdrawn its fourth affirmative defense and prayer for attorneys' fees. In view thereof, applicant's motion to strike opposer's fourth affirmative defense and prayer for attorneys' fees is moot.

FN7. As noted above, in paragraph No. 7, opposer alleges that as the result of the tremendous popularity of opposer's television show, "Opposer has entered into several licensing arrangements and has licensed the use of its mark 'RESCUE: 911' for various merchandise items, such as mugs, caps, T-shirts, sweatshirts, watches and toys."

In paragraph No. 11, opposer alleges that applicant's use of 911 RESCUE BAR is likely to cause confusion because opposer has used the mark RESCUE: 911 on various merchandise items, and the public will believe that the 911 RESCUE BAR candy bar is another merchandise item on which opposer uses its mark.

FN8. Applicants' motion is not a motion for a more definite statement under Fed.R.Civ.P. 12(e) because opposer's answer to applicants' counterclaim is not a pleading to which a responsive pleading is permitted. Moreover, the relief applicants are seeking is that paragraph No. 17 in the counterclaim be deemed admitted so that the issue of likelihood of confusion between applicant's mark for candy bars and opposer's registered mark for a television show stands "as a finding of fact."

FN9. It is apparent, from a close reading of applicants' answer to the notice of opposition, particularly their answers to paragraph Nos. 9-12, that applicants have nowhere denied likelihood of confusion, but have instead asserted that they have superior rights, and thus, that it is opposer's use (not applicants' use) that will cause confusion and applicants (not opposer) who will be damaged.

While it is true that legal conclusions cannot be "admitted" in the sense of an admission against interest [see: Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151 (CCPA 1978) ], when a plaintiff pleads a legal conclusion, and the defendant in its answer admits the plaintiff's pleading, it is as if the parties had stipulated to the matter, thus removing it as an issue to be determined by the Board.